【Trademark Act ★】 A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “CORE ML” by finding that the mark “CORE ML” consisting of common characters is not similar to either of the cited trademarks “CORE” and “コア” (KO-A in English) which consist of common characters.

The Intellectual Property High Court Decision of May 20, 2020 (Case No. 2019 (Gyo-Ke) 10151 — Presiding Judge MORI)

◆ Main text of the case

【Summary of the Judgment】

1. When judging the similarity of the mark “CORE ML” consisting of common characters and the cited trademarks consisting of common characters, or “CORE” and “コア”, the overall mark “CORE ML” should be compared with the cited trademarks. It is not acceptable to judge the similarity of the mark and the cited trademarks by extracting only the “CORE” part from the mark and comparing such part with the cited trademarks.

2. The overall mark “CORE ML” (consisting of common characters) and the cited trademarks “CORE” and “コア” (respectively consisting of common characters) have a concept in common with each other, however, the mark and the cited trademarks have a large difference in sound, and they are also different in appearance. Therefore, the mark is not similar to the cited trademarks.

【Comments】

1. Regarding the summary of Judgment 1, in identifying the mark “CORE ML” (consisting of common characters) as the basis for the judgment of similarity to the cited trademarks, the Court denied, based on the criteria for determining similarity presented by judicial precedents, the identification of the mark by extracting the “CORE” part therefrom as a composite trademark composed of two or more elements, or “CORE” and “ML” in combination.

2. Regarding the summary of Judgment 2, the Court held, based on Judgment 1, that the mark “CORE ML” (consisting of common characters) and the cited trademarks “CORE” and “コア” (respectively consisting of common characters) have a concept in common with each other, however, the mark and the cited trademarks have a large difference in sound, and they are also different in appearance; and therefore, the mark is not similar to the cited trademarks.

【Keywords】Article 4, Paragraph 1, Item 11 of the Trademark Act, similarity of trademarks, extraction of one of elements of a composite trademark, sign indicating source of origin of goods/service, Apple

※ The contents of this article are intended to convey general information only and not to provide any legal advice.

Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)

Contact information for inquiries: k_iida@nakapat.gr.jp